for the eastern district of kentucky frankfort …€¦ · 6. this court has original jurisdiction...

IN THE UNITED STATES DISTRICT COURTFOR THE EASTERN DISTRICT OF KENTUCKY

FRANKFORT DIVISION

SAZERAC BRANDS, LLC, a Delaware limited liability company, and SAZERAC COMPANY, INC., a Louisiana corporation,

Plaintiffs,

v.

PERISTYLE, LLC, a Kentucky limited liability company, and PERISTYLE HOLDINGS, LLC, a Kentucky limited liability company,

Defendants.

)))) )))) ))))))

Civil Action No.

COMPLAINT

1. This action concerns trademark infringement and unfair competition arising from

the use by defendants Peristyle, LLC and Peristyle Holdings, LLC (collectively, “Peristyle” or

“Defendants”) of trademarks identical and confusingly similar to the OLD TAYLOR and

COLONEL E.H. TAYLOR trademarks owned by plaintiff Sazerac Brands, LLC (“Sazerac

Brands”) and used by plaintiff Sazerac Company, Inc. (“Sazerac Company”). Sazerac Brands

and Sazerac Company (collectively, “Plaintiffs”) complain and allege against Peristyle as

follows.

PARTIES

2. Sazerac Brands, a Delaware limited liability company with an address of 10400

Linn Station Road, Suite 300 Louisville, Kentucky 40223, is a wholly-owned subsidiary of

Sazerac Company. Sazerac Brands owns the OLD TAYLOR and COLONEL E.H. TAYLOR

trademarks that are the subject of this dispute.

Case: 3:15-cv-00076-GFVT Doc #: 1 Filed: 10/27/15 Page: 1 of 14 - Page ID#: 1

3. Sazerac Company is a Louisiana corporation with its principal place of business at

3850 N. Causeway Boulevard, Suite 1695, Metairie, Louisiana 70002. Sazerac Company owns

and operates several distilleries in the Commonwealth of Kentucky, including the Buffalo Trace

Distillery with its principal place of business at 113 Great Buffalo Trace, Frankfort, Kentucky

40601, the distillery where Sazerac Company bottles and labels its OLD TAYLOR bourbon

whiskey and COLONEL E. H. TAYLOR whiskey.

4. On information and belief, Peristyle, LLC and Peristyle Holdings, LLC are

Kentucky limited liability companies with the same principal place of business at 4445

McCracken Pike, Frankfort, Kentucky 40601.

JURISDICTION AND VENUE

5. This is an action for federal trademark infringement and unfair competition

arising under the Lanham Act, 15 U.S.C. §§ 1051 et seq., and common law trademark

infringement in violation of Kentucky state law.

6. This court has original jurisdiction over the federal trademark infringement and

unfair competition claims pursuant to 15 U.S.C. §§ 1121 and 1125 and 28 U.S.C. §§ 1331 and

1338.

7. Supplemental jurisdiction is proper for the state law claims under 28 U.S.C. §

1367(a) as the claims are so related to the federal claims that they form part of the same case or

controversy under Article III of the United States Constitution.

8. Personal jurisdiction is not an issue because Peristyle, LLC and Peristyle

Holdings, LLC are organized under the laws of Kentucky as limited liability companies.

9. Venue is proper in the United States District Court for the Eastern District of

Kentucky under 28 U.S.C. § 1391(b) because: (1) Defendants’ tortious conduct has occurred in

this district; (2) Defendants’ principal places of business are located in this district; (3)


Defendants conduct regular and systematic business in this district; and (4) a substantial part of

the events or omissions giving rise to the claim occurred in this district.

FACTS

10. This case involves Defendants’ willful trademark infringement of Sazerac Brands’

OLD TAYLOR and COLONEL E. H. TAYLOR trademarks. Plaintiffs’ claims arise out of

Defendants’ use of the identical trademarks in connection with promoting and organizing events

at a location historically associated with Kentucky bourbon whiskey, and Defendants’ apparent

intent to distill, market, and sell liquor in connection with the same identical trademarks in the

future.

Plaintiffs and the OLD TAYLOR Trademarks

11. Sazerac Company is a leading distiller of spirits and the namesake of America’s

first commercially promoted and sold cocktail – the Sazerac Cocktail. Sazerac Company

produces, bottles, and/or distributes a variety of distilled spirits, including vodka, whiskeys, and

liqueurs. In particular, Sazerac Company produces, bottles, and/or distributes numerous types of

whiskeys, including American bourbon whiskey, Scotch whisky, and Canadian whisky.

12. Sazerac Company’s OLD TAYLOR whiskey is a Kentucky bourbon whiskey.

13. OLD TAYLOR whiskey was originally developed by the famed Colonel Edmund

Haynes Taylor, Jr. (“Colonel E. H. Taylor”) in 1887. Colonel E. H. Taylor owned several

distilleries in his lifetime, two of which eventually became incorporated into Sazerac Company’s

Buffalo Trace Distillery. Another of his distilleries, located near Frankfort, Kentucky, was

designed to resemble a medieval castle with manicured lawns and ornate buildings (the

“Frankfort Distillery”).

14. On information and belief, Peristyle, LLC purchased property that contains the

Frankfort Distillery (the “Peristyle Property”) sometime in April or May of 2014. Prior to that


purchase and over the past several decades, the property changed ownership multiple times and

has either been used for multiple purposes or put to no use at all. On information and belief, the

Peristyle Property is currently owned or leased by Peristyle Holdings, LLC.

15. The OLD TAYLOR trademark was acquired by the James B. Beam Distilling

Company (“Jim Beam”) in 1987. Sazerac Company purchased the worldwide rights to the OLD

TAYLOR mark from Jim Beam in 2009 and began producing, marketing, and distributing

whiskey under the OLD TAYLOR mark in interstate commerce in the United States shortly

thereafter. In early 2015, Sazerac Company assigned the OLD TAYLOR mark to its wholly-

owned subsidiary, Sazerac Brands.

16. Sazerac Company and its predecessors-in-interest have been using the OLD

TAYLOR mark in connection with its famous Kentucky bourbon whiskey since at least as early

as 1887.

17. Sazerac Company currently distills, ages, and bottles its OLD TAYLOR whiskey

at the Buffalo Trace distillery in Frankfort, Kentucky.

18. OLD TAYLOR is sold in many different channels throughout the United States,

including liquor stores, mass retail outlets, grocery stores, bars, clubs, restaurants, and other

retail locations. OLD TAYLOR has also been extensively advertised and promoted in various

media in the United States, including online through the Sazerac.com website.

19. As a result of the long-term and consistent use of the OLD TAYLOR brand in

connection with American bourbon whiskey and the high quality of the product, the OLD

TAYLOR product has become well-known, highly regarded, and has come to embody the

goodwill of Plaintiffs.


20. Sazerac Brands owns the following federal trademark registration and

applications for its OLD TAYLOR mark:

• OLD TAYLOR (stylized), U.S. Reg. No. 507794, issued March 22, 1949, for use in connection with “whiskey” in Class 33 (the “OLD TAYLOR Registration”);

• OLD TAYLOR, U.S. Ser. No. 86/122,346, filed November 19, 2013, for “printed education materials, namely, written articles, printed newsletters, and printed tour and museum exhibit guides, all relating to the history of American whiskey and the production, bottling, and distribution of whiskey; greeting cards, Christmas cards; bookmarks; stickers; ink pens and pencils, stationery products, namely, writing paper, envelopes, note pads, and calendars; driving trail and walking trail maps” in Class 16;

• OLD TAYLOR, U.S. Ser. No. 86/122,347, filed November 19, 2013, for use in connection with “promoting, marketing and fostering travel and tourism in the United States, namely, providing destination advertising services; marketing, advertising and promoting goods and services of others in the field of American whiskey production, bottling, and distribution; online retail gift shops; promotional sponsorship of county and state fairs and community festivals and sporting, equestrian and athletic events; providing information via a website in the field of business information regarding whiskey distilleries; association services, namely, promoting the interests of the bourbon industry” in Class 35;

• OLD TAYLOR, U.S. Ser. No. 86/122,348, filed November 19, 2013, for use in connection with “providing travel and transportation information services via a global information network; organizing and operating travel tours related to the history of American whiskey and the production, bottling, and distribution of whiskey” in Class 39;

• OLD TAYLOR, U.S. Ser. No. 86/122,349, filed November 19, 2013, for use in connection with “providing a destination web site for the provision of educational information regarding whiskey distilleries” in Class 40; and

• OLD TAYLOR, U.S. Ser. No. 86/122,350, filed November 19, 2013, for use in connection with “educational services, namely, conducting classes and seminars in the field of whiskey; arranging and conducting special social events related to the whiskey industry for social entertainment purposes; providing private guided tours of museums, historical sites, and geographic points of interest; organizing social events, namely, whiskey tastings and food tastings; providing a destination web site for the provision of educational information regarding the history of American whiskey” in Class 41.

A copy of the OLD TAYLOR Registration is attached hereto as Exhibit A.

21. In addition to its federal registration for the OLD TAYLOR mark, Sazerac Brands

owns common law rights in its OLD TAYLOR mark for bourbon whiskey and related marketing


and promotional goods. Sazerac Brands’ federal registration and common law trademark rights

in OLD TAYLOR shall be referred to collectively hereinafter as the “OLD TAYLOR Marks”.

22. Sazerac Brands’ OLD TAYLOR Registration has become incontestable within the

meaning of Section 15 of the Lanham Act, 15 U.S.C. §§ 1065, 1115(b) and is conclusive

evidence of Plaintiffs’ exclusive right to use the mark in commerce.

Plaintiffs and the COLONEL E.H. TAYLOR Trademarks

23. Sazerac Company also produces an American whiskey under the COLONEL E.

H. TAYLOR trademark.

24. Since February 2011, Sazerac Company has distilled, aged, and bottled its

COLONEL E. H. TAYLOR whiskey at the Buffalo Trace distillery in Frankfort, Kentucky.

25. Sazerac Company’s COLONEL E. H. TAYLOR whiskey is sold in many different

channels throughout the United States, including liquor stores, mass retail outlets, grocery stores,

bars, clubs, restaurants, and other retail locations. COLONEL E. H. TAYLOR whiskey has also

been extensively advertised and promoted in various media in the United States, including online

through the Buffalotracedistillery.com website.

26. The COLONEL E. H. TAYLOR product has won several awards, including the

2015 Double Gold Medal in The Fifty Best Bourbon Whiskeys 2015 competition and the 2015

Gold Medal in the San Francisco World Spirits Competition. As such, the COLONEL E. H.

TAYLOR product has become well-known, highly regarded, and has come to embody the

significant goodwill of Plaintiffs.

27. Sazerac Brands owns the following federal trademark registration and application

for its COLONEL E. H. TAYLOR trademark:


• COLONEL E. H. TAYLOR, U.S. Reg. No. 4647951, issued December 2, 2014, for use in connection with “distilled spirits, namely, whiskey” in Class 33 (the COLONEL E. H. TAYLOR Registration”); and

• COLONEL E. H. TAYLOR, U.S. Ser. No. 86/122,351, filed November 19, 2013, for use in connection with “educational services, namely, conducting classes and seminars in the field of whiskey; arranging and conducting special social events related to the whiskey industry for social entertainment purposes; providing private guided tours of museums, historical sites, and geographic points of interest; organizing social events, namely, whiskey tastings and food tastings; providing a destination web site for the provision of educational information regarding the history of American whiskey” in Class 41.

A Copy of the COLONEL E. H. TAYLOR Registration is attached hereto as Exhibit B.

28. In addition to its federally registered mark, Sazerac Brands owns common law

rights in its COLONEL E. H. TAYLOR Marks for whiskey and related marketing and

promotional goods. Sazerac Brands’ federal registration and common law trademark rights in

COLONEL E.H. TAYLOR shall be referred to collectively hereinafter as the “COLONEL E.H.

TAYLOR Marks”.

Defendants’ Use of the OLD TAYLOR and COLONEL E. H. TAYLOR Marks

29. On information and belief, Defendants have offered, and intend to continue

offering, event-hosting services on the Peristyle Property in connection with Sazerac Brands’

OLD TAYLOR and COLONEL E. H. TAYLOR Marks and confusingly similar variations

thereof. See Exhibits C through E. See also the image below, which, on information and belief,

is an accurate depiction of signage currently displayed at the Frankfort Distillery on the Peristyle

Property:


30. On information and belief, Defendants have also used Sazerac Brands’ OLD

TAYLOR and COLONEL E. H. TAYLOR Marks, and confusingly similar variations thereof, in

connection with their plans to market and sell a distilled bourbon whiskey and other distilled

spirits in the future. See Exhibits F through I.

31. Sazerac Company first became aware of Defendants’ plan to use Sazerac Brands’

OLD TAYLOR and COLONEL E. H. TAYLOR Marks in connection with distilled spirits and

event services in or around April or May 2014.

32. The parties have engaged in settlement negotiations since 2014 in an effort to

resolve this dispute. It has been more than a year and a half without resolution, however, and

Defendants’ stalling tactics have left Plaintiffs with no choice but to bring a civil action to protect

their valuable trademark rights and prevent consumer confusion.


33. In light of Defendants’ unauthorized use of the OLD TAYLOR and COLONEL E.

H. TAYLOR Marks, confusion is highly likely among consumers as to the source or sponsorship

of Defendants’ services.

34. On information and belief, Defendants currently market their event services

throughout the United States.

35. On information and belief, Sazerac Company’s OLD TAYLOR and COLONEL E.

H. TAYLOR products and Defendants’ goods and services are marketed to the same target

consumers in the same channels of trade.

36. Sazerac Company’s use of the OLD TAYLOR and COLONEL E. H. TAYLOR

Marks long predates Peristyle, LLC’s purchase of the Peristyle Property and use of identical

marks in connection with event-hosting services and distilled spirits.

37. On information and belief, Defendants’ trademark infringement of the OLD

TAYLOR and COLONEL E. H. TAYLOR Marks is willful.

38. Defendants had constructive knowledge of Sazerac Brands’ OLD TAYLOR and

COLONEL E. H. TAYLOR Marks based on Sazerac Brands’ federal trademark registrations (see

Exhibits A and B).

CLAIMS AND CAUSES OF ACTION

FIRST CLAIM FOR RELIEF – TRADEMARK INFRINGEMENT

15 U.S.C. § 1114

39. Plaintiffs re-allege and incorporate Paragraphs 1 through 38 of the Complaint as if

fully set forth here.

40. Defendants are not authorized to use Sazerac Brands’ OLD TAYLOR Marks,

COLONEL E. H. TAYLOR Marks, or any mark that is confusingly similar or in any way implies

that Defendants’ goods and services are in anyway associated with Plaintiffs.


41. Defendants’ use of the OLD TAYLOR and COLONEL E. H. TAYLOR Marks is

likely to confuse consumers into believing that the services offered by Defendants originate

from, or are authorized by Plaintiffs, or that Defendants and Plaintiffs are somehow affiliated.

42. Defendants intentionally and knowingly infringe Sazerac Brands’ trademark

rights.

43. Upon information and belief, Defendants’ infringing activities are likely to cause

damage to Plaintiffs’ hard-earned reputation and goodwill and to divert sales and opportunities

away from Sazerac Company and to Defendants.

44. Defendants are therefore infringing Plaintiffs’ rights in violation of 15 U.S.C. §

1114 and have caused irreparable harm to Plaintiffs by the infringement and Plaintiffs have no

adequate remedy at law.

SECOND CLAIM FOR RELIEF – FEDERAL UNFAIR COMPETITION

15 U.S.C. § 1125(a)



46. Sazerac Company has been using its OLD TAYLOR and COLONEL E. H.

TAYLOR Marks on and in connection with whiskey in interstate commerce and developed

substantial goodwill in these marks well prior to Defendants’ adoption and use of the OLD

TAYLOR and COLONEL E. H. TAYLOR Marks in commerce.

47. Defendants’ use of the OLD TAYLOR and COLONEL E. H. TAYLOR Marks, as

well as substantially similar variations thereof, is likely to confuse consumers into believing that

the goods and services offered by Defendants originate from, are authorized by, or are somehow

affiliated with Plaintiffs.


48. Defendants are therefore engaged in unfair competition and false designation of

origin in violation of 15 U.S.C. § 1125(a) and have caused Plaintiffs irreparable harm by the

infringement and Plaintiffs have no adequate remedy at law.

THIRD CLAIM FOR RELIEF – COMMON LAW TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND PASSING OFF



50. Sazerac Brands owns common law trademark rights in its OLD TAYLOR and

COLONEL E. H. TAYLOR Marks and all such rights owned by Sazerac Brands are superior to

any rights that the Defendants may claim to have in the OLD TAYLOR and COLONEL E. H.

TAYLOR Marks.

51. Defendants’ unauthorized use of the OLD TAYLOR and COLONEL E. H.

TAYLOR Marks, as well as confusingly similar variations thereof, in connection with event

services is likely to cause confusion as to the source or sponsorship of these services, and is

likely to lead the public to believe that Plaintiffs are affiliated with or sponsor or endorse

Defendants and/or Defendants’ services, thereby injuring the reputation and goodwill and

unjustly diverting from Plaintiffs to Defendants the benefits arising therefrom.

52. Defendants’ unlawful activities constitute trademark infringement, unfair

competition, and passing off as proscribed by common law.

53. Defendants’ acts of trademark infringement, unfair competition, and passing off

were committed and are continuing to be committed willfully, knowingly, intentionally, and in

bad faith.


54. Defendants’ acts of trademark infringement, unfair competition, and passing off,

unless enjoined by this Court, will continue to cause Plaintiffs irreparable damage, loss, and

injury for which Plaintiffs have no adequate remedy at law.

PRAYER FOR RELIEF

Plaintiffs pray for the following:

A. That Defendants, their employees, representatives, and agents, including any

distributors and retailers, be enjoined from using the OLD TAYLOR and COLONEL E. H.

TAYLOR Marks, or any marks that are confusingly similar to the OLD TAYLOR and

COLONEL E. H. TAYLOR Marks, in conjunction with event services;

B. That Defendants, their employees, representatives, and agents, including any

distributors and retailers, be enjoined from using the OLD TAYLOR and COLONEL E. H.

TAYLOR Marks, or any marks that are confusingly similar to the OLD TAYLOR and

COLONEL E. H. TAYLOR Marks in conjunction with the marketing, distribution, and sale of

beverage products and related services;

C. That Defendants be directed to file with the Court and serve upon Plaintiffs’

counsel within thirty (30) days of entry of such judgment a report in writing and under oath

setting forth in detail the manner and form in which Defendants have complied with the above;

D. That Defendants be ordered to publish for a period of not less than twelve months

corrective advertising in all media in which the infringing marks have been published, explaining

to customers that Defendants’ use of the OLD TAYLOR and COLONEL E. H. TAYLOR Marks

in connection with their event services were not and are not affiliated with or endorsed by

Plaintiffs;

E. That Defendants be ordered to publish for a period of not less than twelve months

corrective advertising in all media in which the potentially infringing marks have been published,


explaining to customers that Defendants’ use of the OLD TAYLOR and COLONEL E. H.

TAYLOR Marks in connection with their development and future sales of a distilled spirit were

not and are not affiliated with or endorsed by Plaintiffs;

F. That Defendants be ordered to deliver up for impoundment and destruction, or

show proof of destruction, of all advertising, promotional materials, or other materials in the

possession, custody, or control of Defendants bearing (i) Sazerac Brands’ OLD TAYLOR Marks,

(ii) Sazerac Brands’ COLONEL E. H. TAYLOR Marks, and/or (iii) any other marks or symbols

that are found to adopt or dilute any of Sazerac Brands’ OLD TAYLOR and/or COLONEL E. H.

TAYLOR Marks;

G. That an accounting be ordered and that Plaintiffs be granted the amount of

Defendants’ profits realized and/or of the actual damages and/or enhanced damages sustained by

Plaintiffs as a result of Defendants’ unlawful acts as found by the Court, together with

appropriate interest on such damages;

H. That the Court grant any and all relief to which Plaintiffs may be entitled pursuant

to the Lanham Act, 15 U.S.C. §§ 1051 et seq., including treble damages and Plaintiffs’ attorneys’

fees;

I. That the Court grant any and all relief to which Plaintiffs may be entitled pursuant

to state law and state common law, including enhanced damages and attorneys’ fees;

J. That the costs of this action be taxed against Defendants; and

K. That the Court grant Plaintiffs such other and further relief as the Court may deem

just and proper.


JURY DEMAND

Plaintiffs Sazerac Brands, LLC and Sazerac Company, Inc. demand a trial by jury on all issues so triable.

Date: October 27, 2015 By: /s/ Scott P. ZoppothScott P. Zoppoth (KY Bar No. 83905)THE ZOPPOTH LAW FIRM

601 West Main Street, Suite 500Louisville, KY 40202Tel: (502) 568-8884Fax: (502) [email protected]

Peter J. Willsey (pro hac vice to be filed)Brendan J. Hughes (pro hac vice to be filedVincent J. Badolato (pro hac vice to be filed)Morgan A. Champion (pro hac vice to be filed)COOLEY LLP1299 Pennsylvania Avenue, N.W.Suite 700Washington, DC 20004-2400Tel: (202) 842-7800Fax: (202) [email protected]@[email protected]@cooley.com

Counsel for Plaintiffs


Case: 3:15-cv-00076-GFVT Doc #: 1-1 Filed: 10/27/15 Page: 1 of 1 - Page ID#: 15

AO 440 (Rev. 06/12) Summons in a Civil Action

UNITED STATES DISTRICT COURTfor the

__________ District of __________

))))))))))))

Plaintiff(s)

v. Civil Action No.

Defendant(s)

SUMMONS IN A CIVIL ACTION

To: (Defendant’s name and address)

A lawsuit has been filed against you.

Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if youare the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 ofthe Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,whose name and address are:

If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint. You also must file your answer or motion with the court.

CLERK OF COURT

Date:Signature of Clerk or Deputy Clerk

Eastern District of Kentucky

SAZERAC BRANDS, LLC, a Delaware limited liabilitycompany, and SAZERAC COMPANY, INC., a

Louisiana corporation

PERISTYLE, LLC, a Kentucky limited liabilitycompany, and PERISTYLE HOLDINGS, LLC, a

Kentucky limited liability company

William Miles Arvin, Jr.Registered Agent for Defendant Peristyle, LLC108 West Maple StreetNicholasville, KY 40356

Scott P. ZoppothThe Zoppoth Law Firm601 West Main Street, Suite 500Louisville, KY 40202Tel: (502) [email protected]


AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)

Civil Action No.

PROOF OF SERVICE(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))

This summons for (name of individual and title, if any)

was received by me on (date) .

I personally served the summons on the individual at (place)

on (date) ; or

I left the summons at the individual’s residence or usual place of abode with (name)

, a person of suitable age and discretion who resides there,

on (date) , and mailed a copy to the individual’s last known address; or

I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)

on (date) ; or

I returned the summons unexecuted because ; or

Other (specify):

.

My fees are $ for travel and $ for services, for a total of $ .

I declare under penalty of perjury that this information is true.

Date:Server’s signature

Printed name and title

Server’s address

Additional information regarding attempted service, etc:

0.00


for the eastern district of kentucky frankfort …€¦ · 6. this court has original jurisdiction...

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